The simplification of the Hague Agreement for the international registration of industrial designs

The termination of the London Act 1934 makes the Hague System even more user-friendly. With the United States, Japan and South Korea recent adherents, this remains an excellent way to register designs internationally.

The Hague Agreement

The Hague Agreement provides an effective and efficient system for acquiring, maintaining and managing design rights in multiple countries (or with intergovernmental organisations) through a single application filed with the International Bureau of the WIPO. The Hague System was established under the Hague Agreement which is itself constituted by three independent acts: the London Act 1934, the Hague Act 1960 and the Geneva Act 1999. The Hague System simplifies the management of applications as all administration is handled by WIPO, and allows an applicant to register designs in any contracting state by filing a single application, in one language, using one currency (Swiss francs). Historically, an application for an international design could be made under any of the aforementioned three Acts, or a combination of them, depending on which Acts the country in which the applicant resides or of which it is a national, is a signatory. The flexibility and scope of the Hague System has significantly increased in recent years as applicants may now designate Japan, South Korea and the United States in an international design application.

Simplifying the Hague System

Although there are many major advantages of using the Hague System, its utility has to some extent been compromised by the complexity of the somewhat obsolete London Act 1934 as there are a number of differences between the London Act and the later Acts. For example, the London Act, which had only 15 signatories, required registration applications to be submitted only in French and resulted in registration being extended automatically to all contracting states. Therefore, in order to simplify and streamline the Hague System a decision was taken in 2009 to freeze the London Act from 01 January 2010 with no new applications for designations under this Act recorded from that date. WIPO has now confirmed that the London Act will terminate on 18 October 2016. The termination of the London Act will place greater emphasis on the later Geneva Act, the provisions of which are more compatible with the registration systems of many countries. Under the Geneva Act it is also possible to defer the publication of a design for up to 30 months and it also allows for applicants to file design samples rather than graphic reproductions or photographs. These particular features of the registration system are particularly useful for companies operating in the textile and fashion industries.

Individual UK accession

As a member of the EU, UK businesses have been able to secure international design registrations under the Hague System since 2008 as the European Union Intellectual Property Office (EUIPO) is a signatory to the Geneva Act. There are currently 49 signatories to the Geneva Act, including the EUIPO and 14 individual EU Member States. However, the UK is not a member of the Hague Agreement in a national capacity, although the government has been considering individual UK accession to the Geneva Act 1999 for some time as this would be particularly advantageous for small and medium enterprises (SMEs) seeking registrations in only specific EU countries. Furthermore, under the current system, international applicants can only designate the UK as part of a whole EU application, even if the applicant has no requirement for registrations in other EU Member States.

Following the recent public vote to leave the EU, individual UK ratification of the Hague Agreement has become even more pressing. The Intellectual Property Act 2014 provides the legal framework for the UK’s individual accession to the Hague Agreement, and following a successfully concluded consultation in 2015 it is now expected that the UK will accede before the end of 2016. Therefore, in the future, rights holders who only wish to designate the UK will be able to do so without designating the EU and incurring costs associated with translations and legal fees.

Summary

The termination of the London Act 1934 will significantly simplify and streamline the operation of the Hague System for the international registration of designs, and place further emphasis on the provisions set out by the Geneva Act 1999. The advantages and scope of the system have already been strengthened following the recent accession of Japan, South Korea and the United States, with further benefits to international businesses and UK-based SMEs to come following the planned accession of the UK in a national capacity later this year.